This Opinion is a

Precedent of the TTAB

Mailed: April 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE _____

Trademark Trial and Appeal Board

_____

In re Dolce Vita Footwear, Inc. _____

Serial No. 88554717

_____

Susan A. Smith of Ballard Spahr LLP,

for Dolce Vita Footwear, Inc.

Alison F. Pollack, Trademark Examining Attorney, Law Office 106,

Mary I. Sparrow, Managing Attorney.

_____

Before Taylor, Adlin and Larkin,

Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Dolce Vita Footwear, Inc. (“Applicant”) seeks registration on the Principal

Register of the proposed mark CLEAR (in standard characters) for, as amended,

Footwear, lingerie, sleepwear, swimwear, and women’s

clothing, namely, shirts, dresses, skirts, blouses; all of the

foregoing excluding transparent goods

in International Class 25.1

1 Application Serial No. 88554717 was filed on July 31, 2019, based upon Applicant’s

allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the

Trademark Act, 15 U.S.C. § 1051(b).

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The Trademark Examining Attorney finally refused registration of Applicant’s

mark on the grounds that it is deceptively misdescriptive or, in the alternative,

merely descriptive, of Applicant’s identified goods, both under Section 2(e)(1) of the

Trademark Act, 15 U.S.C. § 1052(e)(1). We affirm the refusal to register on the ground

that Applicant’s mark is deceptively misdescriptive; the alternative ground for

refusal that the mark is merely descriptive is moot.

I. Procedural Background

We first review the application prosecution history to clarify how the alternative

refusals were issued. As filed, the application identified the goods as “Footwear;

Lingerie; Sleepwear; Swimwear; Women’s clothing, namely, shirts, dresses, skirts,

blouses.” The Examining Attorney initially refused registration on the ground that

the proposed mark is merely descriptive of the identified goods, relying in part on the

definition of “clear” as “[e]asily seen through; transparent,”2 and arguing that the

word “clear” is commonly used to describe a feature of footwear and that consumers

will immediately understand from Applicant’s proposed mark that Applicant

provides clear footwear.

2 October 28, 2019 Office Action; TSDR 5. THE AMERICAN HERITAGE DICTIONARY OF THE

ENGLISH LANGUAGE (https://www.ahdictionary.com/word/search.html?q=clear).

Citations to the examination record refer to the USPTO’s online Trademark Status and

Document Retrieval system (TSDR) by page number in the downloadable .pdf versions of the

documents.

Citations to TTABVUE throughout the decision are to the Board’s public online database

that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first

number represents the docket number in the TTABVUE electronic case file and the second

represents the page number(s), if applicable.

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Traversing the refusal, Applicant explained that there are no transparent items

in its CLEAR collection, and made of record materials showing items in that

collection, including the following photograph taken at an “August 16, 2019 shoe show

in NYC”:3

Applicant, generally referencing an October 28, 2019 telephone conference with

the Examining Attorney, also addressed the yet-to-be-raised issue of deceptive

misdescriptiveness,4 arguing that its use of CLEAR is completely arbitrary, and that

no consumer could be fooled into thinking Applicant’s footwear is transparent because

the consumer must see the goods when purchasing them and will see that they are

not transparent.

3 November 14, 2019 Response; TSDR 10-11, 13.

4 Applicant particularly noted in its response that when its counsel advised the Examining

Attorney that its products are not transparent, the Examining Attorney responded that if the

mark is not descriptive, then it is deceptively misdescriptive. Id. at TSDR 7.

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In the November 22, 2019 Office Action, the Examining Attorney maintained the

mere descriptiveness refusal and, based on Applicant’s admission that its footwear is

not transparent, alternatively refused registration on the ground that the proposed

mark is deceptively misdescriptive of the goods.

Applicant responded to the November 22, 2019 Office Action with arguments

against the refusals, and proposed an amendment to the identification of goods that

would limit the identified footwear portion of the identification to “footwear,

excluding transparent footwear.”

The Examining Attorney then issued a Final Office Action on February 10, 2020,

maintaining both Section 2(e)(1) refusals as to all identified goods.5

Prior to the deadline for filing a notice of appeal, on June 11, 2020, Applicant

requested reconsideration of the final refusals, seeking to further amend its identified

goods to exclude from all of the identified items “transparent goods,”6 and with

5 The Final Office Action did not directly address Applicant’s proposed amendment to the

identification, but in discussing the goods in her brief, the Examining Attorney refers to the

originally identified “footwear” as “footwear, excluding transparent footwear.” We therefore

consider the amendment to have been accepted. We would be remiss if we failed to point out

that when a proposed amendment is acceptable to the Examining Attorney, the next Office

Action should so state, leaving no room for doubt going forward or in the case of an appeal.

6 Applicant asserts in its Request for Reconsideration that the Examining Attorney untimely

submitted new arguments and evidence in her Final Office Action and should have instead

issued a non-final Office action. A review of the action shows that no new issues were raised

and the refusals were confined to the previously stated merely descriptive and deceptively

misdescriptive refusals. See In re Adlon Brand GmbH, 120 USPQ2d 1717, 1725 (TTAB 2016)

(“Neither Applicant’s new evidence and arguments regarding the outstanding refusal under

Section 2(e)(4), submitted with its request for reconsideration, nor the Examining Attorney’s

submission of additional evidence regarding the same refusal, provided in response to that

request, raised a new issue such as to make appropriate a nonfinal Office Action ….”)

(citations omitted). The Examining Attorney’s inclusion of supplementary evidence directed

to clothing items in support of previously issued refusals was not inappropriate. Applicant

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additional arguments against the refusals. The Examining Attorney denied the

Request for Reconsideration and apparently accepted the further amendment to the

exclusionary language to the identification of goods.7 Applicant then timely filed this

appeal, which is fully briefed.

II. Whether CLEAR is Deceptively Misdescriptive of Applicant’s Goods

Because of the amendment to exclude transparent footwear from the application,

we start with the deceptive misdescriptiveness refusal.

A. The Examining Attorney’s Arguments and Evidence

The Examining Attorney maintains that Applicant’s proposed mark is deceptively

misdescriptive of the identified goods. The Examining Attorney particularly argues:

(1) the evidence shows that the proposed CLEAR mark means “easily seen through;

transparent” which is merely descriptive of Applicant’s goods in that the public will

could have addressed the Examining Attorney’s additional evidence in its Request for

Reconsideration, but did not do so.

In addition, Applicant, at footnote 5 of its brief, points to a related application for the mark

CLEAR BY DOLCE VITA (Serial No. 88554548), noting that “the Examining Attorney agreed

that CLEAR is not Descriptive for ‘non-transparent clothing.’”(Emphasis supplied). The

action of the Examining Attorney in the related case has no effect on the disposition of this

appeal which involves a different mark. Nevertheless, the prior decisions and actions of other

trademark examining attorneys in registering other marks are not binding upon the USPTO

or the Board. See In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10

(TTAB 2017). Each case is decided on its own facts, and each mark stands on its own

merits. Id.

7 We presume so because the amendment was neither rejected nor was any ground raised for

rejection. Although not addressed in the denial of the request for reconsideration, the

proceeding records have been updated and the subsequently-filed appeal briefs refer to

further amended goods. This decision refers to the goods as so amended. In addition, in this

case, the Examining Attorney’s failure to expressly accept Applicant’s second proposed

amendment restricting all the identified goods to non-transparent items may have led to the

maintenance of the merely descriptive refusal, which, after that amendment, should have

been withdrawn when the Examining Attorney ruled on the request for reconsideration.

Serial No. 88554717

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believe that Applicant provides transparent footwear and clothing; (2) it is plausible

that Applicant’s footwear and clothing could possess such a feature because the

evidence shows that clear footwear and clothing, such as lingerie and dresses are

common8; and (3) a reasonably prudent purchaser is likely to believe the

representation (implied by the word “clear”) because consumers commonly encounter

footwear and clothing that are clear or transparent, even though Applicant’s

identification of goods, as amended, specifically excludes transparent goods.9

In addition to the noted definition of the word “clear,” to show that CLEAR

describes a feature or characteristic that footwear plausibly possesses, the Examining

Attorney submitted screenshots from Applicant’s website, as well from the websites

of third parties Steve Madden and Nordstrom,10 Zappos, PrettyLittleThing, boohoo,

and U.S. Shein,11 and Asos,12 all showing descriptive use of the word “clear” by

competitors in connection with features and characteristics of footwear, such as

transparent straps and heels. Excerpts from the screen captures are shown below

(emphasis added):

8 In this case, all of the identified goods are in the same class. If an applicant’s mark is merely

descriptive or deceptively misdescriptive for any of the listed goods in a single class in the

application it cannot be registered in that class. “A descriptiveness [or misdescriptiveness]

refusal is proper ‘if the mark is descriptive [or misdescriptive] of any of the [goods or] services

for which registration is sought.’” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102

USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77

USPQ2d 1087, 1089 (Fed. Cir. 2005)).

9 Examining Attorney’s brief. 8 TTABVUE 5-8.

10 October 28, 2019 Office Action; TSDR 8-17.

11 November 22, 2019 Office Action; TSDR 5-9 and 24-37.

12 February 10, 2020 Final Office Action; TSDR 27.

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The Examining Attorney also made of record a copy of an article from FN

(http://footwearnews.com) titled “8 Clear Shoes to Prepare for Spring’s Transparent

Takeover,” which discusses “[c]lear shoes” from eight footwear brands, including

pictures of the shoes showing the “clear” features13 and an article from GLOWSLY

titled “19 Best Transparent Clear Shoes to Channel Cinderella: PVC Shoe Trend.”14

The article discusses trends in clear shoes, provides links to 19 different styles and,

in part, states:

Clear shoes were one of the big breakout trends on

the spring/summer runways. We saw gorgeous

transparent shoes on the catwalks of Chanel, Balmain,

Yeezy, Prada and more. If you follow all the Instagram

celebs, then you’ve probably been salivating over a

13 November 22, 2019 Office Action; TSDR 10-23.

14 February 10, 2020 Final Office Action; TSDR 30-46 (emphasis added).

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particular pair of transparent Perspex shoes since last

spring!

…

Get into the how’s and what’s of transparent shoes, with

our brief history of the trend. We’ve also got styling

suggestions for clear heels, so you can make the style work

for every occasion.

With regard to use of the word “clear” for clothing, the Examining Attorney made

of record website screenshots showing the word “clear” used by third-parties, i.e.,

Amazon Fashion, PrettyLittleThing, Clear About This, and Doll’s Kill, to describe

features or characteristics of lingerie, skirts and dresses.15 Excerpts from these

screenshots include, by way of example, the following:

Amazon Fashion

15 Id. at TSDR 6-26.

Serial No. 88554717

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PrettyLittleThing

Clear About This

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B. Applicable Law/Analysis

A mark is considered deceptively misdescriptive if: (1) the mark misdescribes a

quality, feature, function, or characteristic of the goods or services with which it is

used; and (2) consumers would be likely to believe the misrepresentation. See In re

Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White

Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc.,

221 USPQ 1213, 1214 (TTAB 1984)).

As to the first part of the test, a mark is misdescriptive when it is “merely

descriptive, rather than suggestive, of a significant aspect of the goods or services

which the goods or services plausibly possess but in fact do not.” In re Hinton, 116

USPQ2d 1051, 1052 (TTAB 2015) (citing In re Shniberg, 79 USPQ2d 1309, 1312

(TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005)). As to

the second part, the reasonably prudent consumer test is applied in assessing

whether consumers are likely to believe the misrepresentation. In re Hinton, 116

USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco

Corp., 226 USPQ 169, 179 (TTAB 1985)).

The dictionary definition and third-party website evidence made of record by the

Examining Attorney convince us that consumers will perceive CLEAR as describing

a feature that footwear, lingerie, skirts and dresses could plausibly have, namely that

such goods are transparent, “clear,” or include transparent or “clear” accents or

elements. Indeed, Applicant stated in its brief:

For purposes of appeal, Applicant will not dispute the

Examining Attorney’s assertion that CLEAR means

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“transparent” when applied to footwear. … Given that, it

thus follows that if a party tried to register CLEAR broadly

for all forms of footwear, the mark would be descriptive

because it would describe a feature or characteristic of at

least one form of footwear (namely, “transparent footwear”)

within the broader definition.

Applicant’s brief pp. 4-5. (Emphasis supplied and internal citations omitted.)16 And,

the record shows that at one time Applicant offered a shoe that it described as having

“clear accents.”17 Applicant adds, however, that it “is not seeking to register CLEAR

for both ‘transparent and non-transparent footwear;’ it is only seeking to register it

for non-transparent footwear.” Id. at p. 5. (emphasis supplied).18 Based on the

evidence of record, we have no doubt that consumers will immediately perceive the

word “clear” as describing a feature or attribute that Applicant’s footwear and

clothing could plausibly have. We therefore find that Applicant’s restriction of its

identification of goods to non-transparent or non-clear goods is sufficient to show (and

in fact conclusively establishes) that the proposed CLEAR mark misdescribes a

feature or attribute of the goods in that Applicant’s identified footwear and clothing

items do not possess the characteristic of being “clear.” See generally TRADEMARK

MANUAL OF EXAMINING PROCEDURE § 1209.04 (2018), and the authorities cited

therein. Thus, the first part of the test for deceptive misdescriptiveness has been

satisfied.

16 6 TTABVUE 5-6.

17 October 28, 2019 Office Action; TSDR 8.

18 6 TTABVUE 6.

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Applicant’s contention that its proposed mark CLEAR does not describe a

plausible feature of its goods because it has restricted its identification so that the

recited goods do not include transparent footwear and clothing is unavailing. We

cannot assume that consumers of Applicant’s goods will be aware that its

identification is so restricted, and the restriction is not controlling of public

perception. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB

2018). Cf., e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978)

(“[T]he locus of potential confusion is [not] in the files of the PTO.”); In re Wada, 48

USPQ2d 1689, 1692 (TTAB 1998) (public is unaware of disclaimers that “quietly

reside” in the records of the Office).

Moreover, Applicant cannot avoid a finding of deceptive misdescriptiveness by

excluding from its identification the very characteristic that its mark is

misdescribing. Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB

2006) (“We find that the word CAFETERIA used in connection with restaurant

services that explicitly exclude cafeteria-style restaurants does misdescribe the

services.”). In addition, the record is devoid of any evidence that, as Applicant

proposes, the word “clear” suggests other meanings when used for or in connection

with footwear or clothing. Even so, that a term may have other meanings in different

contexts is not controlling. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB

1979). “It is well settled that so long as any one of the meanings of a term is

descriptive [or misdescriptive], the term may be considered to be merely descriptive

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[or misdescriptive].” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB

2018); In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018).

Having determined that the term misdescribes the goods, we now assess whether

consumers are likely to believe the misrepresentation. Again, the evidence shows that

footwear and clothing may be transparent or “clear” or include “clear” elements, such

as heels and straps on footwear and straps on clothing, and that those goods are

described as such by those in the industry and by ordinary consumers. As the record

reflects, “clear shoes were one of the big breakout trends on the spring/summer

runways.” As a result, consumers seeing the proposed mark CLEAR for footwear and

clothing items are likely to believe that those items are clear or transparent even

though they are not.

We are not persuaded by Applicant’s assertion that reasonably prudent consumers

are unlikely to believe the “misrepresentation,” because footwear and clothing are

goods that buyers will visually inspect before purchase. In making this argument,

Applicant relies on three Board decisions: In re Econoheat, Inc., 218 USPQ 381, 383

(TTAB 1983) (SOLAR QUARTZ for space heaters), Nw. Golf Co. v. Acushnet Co., 226

USPQ 240, 242-43 (TTAB 1985) (POWER-STEP for golf clubs), and In re Robert

Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for paint brushes

made from synthetic fibers).

We find these decisions to be distinguishable in material respects from this case.

Unlike this case, the mark at issue in Robert Simmons included the word “sable,”

which is defined in, for example, the online version of MERRIAM-WEBSTER, as “the

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color black,” yet the mark also included the term “WHITE” the antithesis of “black”

so consumers would not be deceived into believing WHITE SABLE paint brushes

would be made from the hair or fur of a sable.19 In Northwestern Golf, unlike here,

the term at issue (“STEP”) did not necessarily have a misdescriptive meaning to

consumers: purchasers would not “necessarily construe the word ‘STEP’ in applicant’s

[POWER-STEP] mark as signifying that applicant’s golf club shaft has but a single

step.”20 Nw. Golf, 226 USPQ at 242. Rather, “they might just as readily believe that

the word ‘STEP’ is used in the mark as a synonym for ‘step pattern.’” Id. at 243.

Finally, in Econoheat, there did not appear to be any evidence of solar-powered quartz

space heaters and, in fact, the term “Solar” referred to some other attribute of the

device: the type of heat emitted. See 218 USPQ at 382. Here, by contrast, there is

plentiful evidence of use of the term “clear” to describe transparent examples of the

goods at issue, and Applicant has offered no other possible meaning the term could

have in the context of these goods. Accordingly, we do not find that these cases

support Applicant’s arguments.

Just because upon visually inspecting Applicant’s footwear or clothing items

consumers may understand that they do not include transparent or clear attributes

19 www.merriam-webster.com/dictionary/sable, last visited March 15, 2021. The Board may

take judicial notice of dictionary definitions, including online dictionaries which exist in

printed format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d,

823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re CyberFinancial.Net Inc., 65 USPQ2d

1789, 1791 n.3 (TTAB 2002).

20 The term “step” in that context meant a discrete point on the shaft of a golf club where the

shaft narrowed as it extended further from the handle and approached the club head. Nw.

Golf, 226 USPQ at 241.

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does not negate their understanding before they inspect the goods. If Applicant’s

goods were to be promoted by word-of-mouth or on social media or in print (e.g., in

fashion blogs, magazine articles, or even Applicant’s future advertising) without an

image of the goods, a reasonable consumer seeking what the record shows to be a

fashion trend would believe that Applicant’s goods, promoted under the proposed

CLEAR mark, would feature transparent or clear attributes. See, e.g., In re

Woodward & Lothrop Inc., 4 USPQ2d 1412, 1414 (TTAB 1987) (CAMEO held

deceptively misdescriptive of jewelry items because while a reasonable purchaser

carefully examining jewelry which has no cameos or cameo-like elements may not be

deceived into believing that it does, not all jewelry would be purchased in that

manner; some jewelry may be purchased from catalogs which either inadequately

describe or depict the jewelry items.); see also ALP of South Beach, 79 USPQ2d at

1014 (finding that pre-sale deception may occur without a sale taking place based on

the deception). Pre-sale discussion and promotion leading to deception is likely in this

case given the popularity of footwear with clear accents or elements and the fact that

Applicant at one time offered a shoe with clear accents.

In view of the above, we find that the second part of the deceptive

misdescriptiveness test also has been satisfied.

C. Conclusion

After reviewing the evidence of record, we find that both parts of the deceptive

misdescriptiveness test have been satisfied and are unrebutted and, accordingly,

Applicant’s proposed mark is deceptively misdescriptive within the meaning of

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Section 2(e)(1). In view of our determination on the ground of deceptive

misdescriptiveness, the alternative ground for refusal that the mark is merely

descriptive is moot.

Decision: The refusal to register Applicant’s proposed mark CLEAR for the

identified goods on the ground that it is deceptively misdescriptive under Trademark

Act Section 2(e)(1) is affirmed.